IL and USA Implement Patent Cooperation Arrangement

|10/1/2014 |

The Israel Patent Office (ILPO) and the United States Patent and Trademark Office (USPTO) entered into an arrangement in which ILPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for certain international applications filed with the USPTO as a Receiving Office provided that the applications are submitted in the English language and the ILPO is chosen as a competent authority by the applicants of said applications.

The following restrictions apply:  The ILPO will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification. 
For cited documents in the International Search Report, the ILPO intends to furnish the applicants with copies of the documents upon request and on payment.
The arrangement goes into effect on October 1, 2014.
This arrangement will allow US PCT applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications.
By entering this arrangement, the USPTO validates the quality of search provided by the ILPO and enables applicants using the ILPO as their ISA with services as are available when selecting other ISAs.
Using the ILPO as the ISA/IPEA will also allow applicants to avail themselves of procedural advantages available under the Patent Prosecution Highway (PPH) program. Under the PPH agreement between the ILPO and the USPTO, a favorable opinion from the ILPO acting as an ISA/IPEA on novelty, inventive step, and industrial applicability of a PCT application will permit an applicant to expedite prosecution of a corresponding U.S. or IL application.
Asa Kling Director of the Israel Patent Office: “This is a significant stepping-stone for the ILPO. We look forward to implementing this arrangement and see it as an important enhancement in the long standing bilateral cooperation between our offices. I am sure US applicants will appreciate the value in having another quality and time efficient option for designation of PCT ISA/IPEA operations" said, in his remarks.
Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO: “The collaboration between the USPTO and ILPO will benefit US patent applicants under the Patent Cooperation Treaty as it will provide additional search and preliminary examination options at a competitive cost.”